Are promotional gifts enough to demonstrate a trademark is being used? BREW 4U v. ICON DESIGN

A trademark is something that a product seller uses to identify the products it sells. A word, phrase or symbol is what most people commonly think of as a trademark, but anything that a product seller uses to distinguish its products from competitor’s products can be granted trademark protection. Obtaining a right to a trademark law in the United States is based on using the trademark in commerce. The first person to use a trademark to brand products is considered the senior user and has priority over junior users of a trademark. A trademark can be registered with the United States Patent and Trademark Office to strengthen the rights associated with a trademark, however registration is not required to begin using a trademark to brand products.

Trademark law is not intended to allow a trademark owner to accumulate a collection of trademarks that go unused. Evidence of the trademark being used in commerce must be presented at some stage of the trademark registration process in the United States. To maintain a registered trademark, a trademark owner must file maintenance documents which demonstrate the trademark continues to be used in commerce. If a trademark owner stops using a trademark in commerce, then the trademark owner will eventually loose their claim to the trademark.

According to 15 USC 1127, a trademark is considered abandoned if “its use has been discontinued with intent not to resume such use.” The intent not to resume may be inferred from circumstances. Trademark abandonment, therefore, requires two elements: 1) nonuse; and 2) intent not to resume use. If someone believes that a registered trademark has been abandoned by its owner, then they can petition the United States Patent and Trademark Office to cancel the registration for the abandoned trademark. Motivation to cancel an abandoned trademark might arise when a new trademark application is being denied registration because the USPTO believes the new trademark is confusingly similar to an already registered trademark. If the new trademark applicant can get the old, abandoned, trademark canceled then that would clear the path for the new trademark to be registered. Successfully getting a registered trademark canceled for abandonment depends on what evidence can be presented to the USPTO.

BREW 4U, LLC v. ICON DESIGN GROUP, Cancellation No. 92067639 (TTAB 2020) illustrates the high standard of evidence which must be introduced to cancel a trademark.

This case began when Petitioner’s trademark Application Serial No. 87194835 for the mark DEVIL’S CANYON
BREWING COMPANY was refused registration on the ground of likelihood of confusion with Respondent’s registered mark.

Respondent, is a brand development and package design company that focuses on the wine industry. Respondent is not a winery or a seller or re-seller of wine as it does not manufacture, produce or distribute wine. However, Respondent has wine produced and bottled to be given as promotional gifts. Respondent registered the mark DEVIL’S CANYON VINEYARD in 2006 and subsequently filed maintenance documents showing use of the trademark. When these maintenance documents were filed Respondent was not making, selling, re-selling,
manufacturing, or licensing wine or operating a winery under the DEVIL’S CANYON or DEVIL’S CANYON WINERY marks.

After Petitioner’s application was refused, Petitioner requested that the USPTO cancel Respondents trademark on two gounds, 1) abandonment and 2) fraud in the procurement and maintenance of the Registration. Both theories rest on the argument that Respondent does not manufacture or sell wine.

The Trademark Trial and Appeal Board reviewed the petition and declined to cancel the Respondent’s trademark registration. The TTAB found that Petitioner has not proved abandonment by a preponderance of the evidence and has failed to demonstrate sufficient cause to cancel Respondent’s registration on the grounds of abandonment. Respondent’s manufacturing of wine through third parties and listing of DEVIL’S CANYON on its website as an active project was sufficient to demonstrate that Respondent was using the trademark in commerce.

The TTAB noted that fraud in procuring a trademark registration occurs when an applicant for registration knowingly makes a false, material representation of fact in connection with an application to register with the intent of obtaining a registration to which it is otherwise not entitled. Based on the record the TTAB concluded that the Petitioner had failed to show that Respondent made false statements with the intent to defraud the USPTO.

The TTAB concluded that Petitioner failed to submit sufficient evidence to cancel the trademark registration for abandonment or fraud.

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